Trials@uspto.gov Paper No. 116
`571.272.7822
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` Filed: April 28, 2021
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`UNITED STATES PATENT AND TRADEMARK OFFICE
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`ACRUX DDS PTY LTD., ACRUX LIMITED, and
`ARGENTUM PHARMACEUTICALS LLC,
`Petitioner,
`v.
`KAKEN PHARMACEUTICAL CO., LTD. and VALEANT
`PHARMACEUTICALS INTERNATIONAL, INC.,1
`Patent Owner.
`
`
`IPR2017-001902
`Patent 7,214,506 B2
`
`
`
`Before ERICA A. FRANKLIN, SUSAN L. C. MITCHELL, and
`ROBERT A. POLLOCK, Administrative Patent Judges.
`
`MITCHELL, Administrative Patent Judge.
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`
`
`
`DECISION
`Patent Owner’s Motion to Expunge Confidential Information
`37 C.F.R. § 42.56
`
`
`1 Patent Owner identifies Bausch Health Companies Inc., formerly known as
`Valeant Pharmaceuticals International, Inc., as a real party-in-interest.
`See Paper 87, 1; Paper 115, 1.
`2 IPR2017-01429 has been joined with the instant proceeding.
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`IPR2017-00190
`Patent 7,214,506 B2
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`Patent Owner filed a Motion to Expunge under 37 C.F.R. § 42.56,
`
`Exhibits 1506, 1507, 1511, 1663, 2093 through 2095, 2098, 2099, and
`2116A, as well as Papers 52, 64, 69, and 74, because those materials contain
`“Patent Owner’s Confidential Business Information related to, inter alia,
`proprietary sales and commercial market information and commercially
`relevant sales data.” Paper 115, 3 (citation omitted).
`
`Patent Owner also requests that Exhibits 2204 and 2205, which
`contain Patent Owner’s and Petitioner’s confidential business information
`related to settlement agreements between the parties, also be expunged from
`the record under 37 C.F.R. § 42.56. Id. Patent Owner notes that these
`exhibits have been confidentially filed with the Federal Trade Commission.
`Id. at 4. Patent Owner represents that the motion is unopposed. Id. at 1.
`On June 6, 2018, we granted each of the parties’ motions to seal,
`which sealed the documents that Patent Owner is now seeking to have
`expunged. See Paper 79, 6 (sealing Exhibits 1663, 2093–2095, 2098, and
`2099; designated portions of Exhibits 1506, 1507, 1511, and 2116; and
`Papers 52, 64, 69, and 74, as “Board and Parties Only”). On that same date,
`we also entered a final written decision that was subsequently vacated on
`appeal to the United States Court of Appeals for the Federal Circuit, and
`remanded back to the Board. See Paper 80, Kaken Pharm. Co., Ltd. v.
`Iancu, 952 F.3d 1346, 1355 (Fed. Cir. 2020).
`After remand, all parties settled their dispute and filed joint motions to
`terminate, which were granted. See Papers 105, 112, 114. The Board also
`granted the parties’ request to treat two confidential settlement agreements
`(Exhibits 2204 and 2205) as business confidential information and be kept
`separate from the file of U.S. Patent No. 7,214,506 B2. Paper 114, 4.
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`IPR2017-00190
`Patent 7,214,506 B2
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`We note that the parties have provided redacted, public versions of
`Papers 52, 64, 69, and 74, see Papers 51, 65, 70, 75, respectively, and also
`provided redacted, public versions of Exhibits 1506, 1507, 1511, and 2116.
`Considering the vacation of the final written decision and settlement by the
`parties before issuance of any further opinion on remand, in addition to the
`parties’ efforts to provide public versions of documents that do not solely
`contain confidential business information, we find good cause to grant
`Patent Owner’s Motion to Expunge as to these papers and exhibits.
`We, however, do not find that Patent Owner has demonstrated good
`cause to expunge the settlement agreements between the parties reflected in
`Exhibits 2204 and 2205. As the Board has noted:
`35 U.S.C. § 317(b) specifies that settlement agreements
`“shall be filed in the Office before the termination of the inter
`partes review;” that subject to request they “shall be treated as
`business confidential information;” and “shall be kept separate
`from the file of the involved patents.” The statute also requires
`that settlement agreements remain on file so that they “shall be
`made available only to Federal Government agencies on written
`request, or to any person on a showing of good cause.”
`37 C.F.R. § 42.74(c) includes the same requirement that
`settlement agreements “be treated as business confidential
`information” and “be kept separate from the file of the involved
`patents.” 37 C.F.R. § 42.74(c) also requires that settlement
`agreements remain on file so that they shall be made available
`“[t]o a Government agency on written request,” or “[t]o any
`other person . . . on a showing of good cause.”
`Unified Patents, LLC v. Browse3d LLC, IPR2019-01265, Paper No. 14, 3
`(PTAB Feb. 25, 2020). We are required to maintain the settlement
`agreements in the record. See 35 U.S.C. § 317(b); 37 C.F.R. § 42.74(c); see
`also DTN, LLC v. Farms Technology, LLC, IPR2018-01412, Paper 20, 10
`(PTAB June 14, 2019) (denying motion to expunge collateral agreements to
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`IPR2017-00190
`Patent 7,214,506 B2
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`a settlement because they “fall under the ambit of 35 U.S.C. § 317(b) as
`agreements that must be filed in the Office”) (emphasis added). The fact that
`the agreements have also been submitted to another federal agency does not
`alter this requirement.
`As Patent Owner noted, we have granted its request to have the
`settlement agreements be treated as business confidential information and
`kept separate from the file of the involved patent. See Paper No. 115, 3–4;
`see also Unified Patents, LLC v. Cassiopeia IP LLC, IPR2020-00111, Paper
`16, 2 (PTAB July 2, 2020) (stating with regard to sealing the settlement
`agreement and keeping it separate from the involved patent file, “we have
`already implemented measures to ensure that the settlement agreement will
`not lose its status as protected confidential information”). Therefore, we
`deny Patent Owner’s Motion to Expunge as to the settlement agreements,
`Exhibits 2204 and 2205.
`
`
`IV. ORDER
` Accordingly, it is hereby:
`ORDERED that Patent Owner’s Motion to Expunge is granted in
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`part;
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`FURTHER ORDERED that Exhibits 1506, 1507, 1511, 1663, 2093
`through 2095, 2098, 2099, and 2116 (confidential version), and Papers 52,
`64, 69, and 74, shall be expunged from the record; and
`FURTHER ORDERED that Exhibits 2204 and 2205 shall remain in
`the record as business confidential information and kept separate from the
`file of U.S. Patent No. 7,214,506 B2.
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`IPR2017-00190
`Patent 7,214,506 B2
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`PETITIONER:
`
`Tara Raghavan
`Steven Birkos
`RAKOCZY, MOLINO, MAZZOCHI, SIWIK, L.L.P.
`traghavan@rmmslegal.com
`sbirkos@rmmslegal.com
`
`Teresa Rea
`Shannon Lentz
`CROWELL & MORING LLP
`trea@crowell.com
`slentz@crowell.com
`
`PATENT OWNER:
`John D. Livingstone
`Naoki Yoshida
`Anthony Hartmann
`Barbara R. Rudolph
`Trenton A. Ward
`FINNEGAN, HENDERSON, FARABOW,
`GARRETT & DUNNER, L.L.P.
`john.livingstone@finnegan.com
`naoki.yoshida@finnegan.com
`anthony.hartmann@finnegan.com
`barbara.rudolph@finnegan.com
`trenton.ward@finnegan.com
`
`Toan P. Vo
`BAUSCH HEALTH COMPANIES INC.
`toan.vo@bausch.com
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`5
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